Ex Parte Serros et al

Board of Patent Appeals and Interferences

Jun 15, 2010

10850647 (B.P.A.I. Jun. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RON SERROS and EDWARD MILAM
____________

Appeal 2009-004215
Application 10/850,647
Technology Center 3600
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Decided: June 15, 2010
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004215
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STATEMENT OF THE CASE
Ron Serros and Edward Milam (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-16. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The invention is to a tile spacer and method of installing tiles with a
tile spacer. Spec. 1:11-12.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A permanent spacer for providing a substantially
uniform space between tiles, the spacer comprising:
a predetermined configuration of said spacer
comprising at least two radially extending legs and a common
junction wherein said at least two legs and said common
junction comprise a height configured to be less than a
thickness of the tiles, said spacer comprising a solid spacer; and
a spacer material that adheres to an underlayment
material underlaying the tiles and a grout material and said
spacer material substantially maintains its size and shape
through varying thermal and moisture conditions.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Berger US 2,031,684 Feb. 25, 1936
Joos US 4,953,341 Sep. 4, 1990
Wirkus US 5,845,443 Dec. 8, 1998
Pytlewski US 6,823,640 B1 Nov. 30, 2004

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The Rejections
The following Examiner’s rejections are before us for review:1
1.) Claims 1, 4, 5, 9, and 12 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Berger.
2.) Claims 2, 3, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Berger in view of Wirkus.
3.) Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Berger in view of Joos.
4.) Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pytlewski in view of Berger.
5.) Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pytlewski in view of Berger, and further in view of
Wirkus.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 The Examiner withdrew the rejection under 35 U.S.C. § 112, first
paragraph. Ans. 3. Therefore, the rejection is not before us for review.
Appellants seek review of the Examiner’s refusal to enter the after final
amendment filed on June 18, 2007. The refusal to enter an after final
amendment filed by Appellants is a petitionable matter; not an appealable
matter. Accordingly, that issue is not within the jurisdiction of the Board,
and we will not review it. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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OPINION
Rejection (1) -- Anticipation based on Berger
Appellants fail to separately argue claims 1, 4, 5, 9, and 12. We select
claim 1 as representative to decide the appeal of this ground of rejection.
37 C.F.R. § 41.37(c)(1)(vii) (2009).
We will sustain the rejection of claim 1. A majority of Appellants’
arguments for patentability are directed to elements not within the claims.
See App. Br. 10 (spacer is made from a similar material as the underlayment
material; the spacer is not removed from an installation). As such, these
arguments are not commensurate in scope with the claims and therefore are
unpersuasive to show that Berger fails to anticipate claim 1.
Appellants’ arguments concerning the non-removable capability of
the spacer are unconvincing as well. As the Examiner explicitly explained
(see Ans. 11) to Appellants, Berger expressly discloses the spacer’s
permanence by the description that “[a]s illustrated in Fig. 2, the axial
thickness of the spacer 16 is substantially less than the thickness of the tiles,
so that when the joint spaces are filled with cement, the latter [the cement]
will completely cover the spacer.” Berger, page 2, left column, ll. 21-25.
Appellants have not provided a cogent explanation why Berger’s tile spacer
does not remain in place based on this express disclosure or how such an
express disclosure prohibits a finding of permanence with Berger’s spacer.
Accordingly, the Examiner’s rejection of claim 1 is sustained. The
Examiner’s rejection of claims 4, 5, 9, and 12 is sustained for the same
reasoning since Appellants failed to separately argue the patentability of
each claim. 37 C.F.R. § 41.37(c)(1)(vii).

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Rejection (2) -- Obviousness based on Berger and Wirkus
Claims 2 and 10
These claims require that the spacer material have at least some of the
underlayment material in its composition. The Examiner appears to interpret
the claim limitation to be that any material the Examiner considers an
underlayment material will suffice, and considers that because Wirkus’
material is placed between the blocks, that material is an underlayment
material. See Ans. 6 and 10. However, the Examiner’s rejection omits an
analysis explaining why a person having ordinary skill in the art would
consider milled compressed fibrous material an “underlayment material”
based on Wirkus’ teachings that place the spacer 12 between the edges of the
glass blocks and not along the back face of the glass block, which is where
the underlayment material of the Appellants’ invention is located.
Moreover, based on Wirkus’ teachings, it appears a finding that milled
compressed fibrous material is an underlayment material is inconsistent with
the teachings within Wirkus since Wirkus utilizes silicon to bond the spacer
12 to the glass blocks. See Wirkus, col. 2, ll. 65-67.
Claims 3 and 11
The Examiner fails to provide a persuasive explanation why a person
of ordinary skill in the art would consider milled compressed fibrous cement
analogous to the Markush grouping of claimed mortars and tile adhesive.
The Examiner’s statement that because Wirkus is cement-based, and all the
underlayment materials listed in the claim are cement-based (see Ans. 12), is
a sweeping generalization. The record is devoid of any evidence that all
cement-based materials are of a structural integrity or composition to be an
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underlayment material for tiles. For instance, there is no evidence within
Wirkus that the milled compressed fibrous cement material has any adhesive
aspect such that it could be considered an underlayment material for tiles.
Additionally, to find that the taught milled compressed fibrous cement
within Wirkus is an underlayment material appears inconsistent with the
teachings of Wirkus, since Wirkus teaches that a silicon layer bonds the
spacer 12 to the glass blocks. See Wirkus, col. 2, ll. 65-67.
In view of the foregoing, the Examiner’s rejection of claims 2, 3, 10,
and 11 is reversed.
Rejection (3) -- Obviousness based on Berger and Joos
Claims 6 through 8 further define the shape of the spacer, e.g., I, V, T.
Appellants’ arguments for this ground of rejection incorporate their previous
arguments for patentability against Berger. Inasmuch as those arguments are
unconvincing for the reasoning given above, they are likewise unconvincing
for this ground of rejection against claims 6 through 8. Moreover, Joos
teaches tile spacers having the claimed configurations of I, V, and T (see
Figures 6, 7, and 8) and a person of ordinary skill in the art would consider
the application of the different shapes of spacers taught in Joos for the
spacers disclosed in Berger as no more than a combination of prior art
elements combined together according to known methods to yield a
predictable result, viz., tile spacers with I, V, and T configurations.
Accordingly, the Examiner’s rejection of claims 6 through 8 is
sustained.
Rejection (4) -- Obviousness based on Pytlewski and Berger
The Examiner’s findings are adopted regarding: 1) Pytlewski teaching
a method of installing tiles that follows the claimed steps; 2) the difference
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between Pytlewski’s method and the claimed method is that the spacer being
installed is not solid, but hollow; 3) that Berger discloses a solid spacer; and
4) that a person of ordinary skill in the art would substitute a solid spacer for
a hollow spacer in order to have a spacer with increased structural integrity.
See Ans. 9.
Appellants’ arguments are unconvincing to demonstrate that the
claimed method is not obvious over the combined teachings of Pytlewski
and Berger. Appellants’ arguments are directed to features not claimed, e.g.,
the spacer is made from an underlayment material. Additionally,
Appellants’ arguments attack Pytlewski individually, e.g., Pytlewski’s
spacer is made of plastic, rather than attacking the combined teachings of
Pytlewski and Berger. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Moreover, Appellants’ arguments are
conclusory when directed to Pytlewski not teaching or implying the
limitations within the claims. App. Br. 11.
Likewise, Appellants’ arguments with respect to Berger that have
been incorporated within are unconvincing to show nonobviousness of the
claimed invention for the reasoning given above with respect to claims 1, 4,
5, 9, and 12. Moreover, such incorporation is essentially attacking the
references individually rather than the disclosure of the combined teachings
of Pytlewski and Berger. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references.)
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Accordingly, the Examiner’s rejection of claims 13 and 14 is
sustained.
Rejection (5) -- Obviousness based on Pytlewski, Berger, and Wirkus
The Examiner’s rejection is in error because it concludes that a person
of ordinary skill in the art would consider the milled compressed fibrous
cement material used to form the spacer 12 an underlayment material based
on a sweeping generalization that since both the claimed material and
Wirkus’s material are cement-based, Wirkus’s material would be a
satisfactory underlayment material. The record provides no evidence or
analysis that a person of ordinary skill in the art would consider milled
compressed fibrous cement taught within Wirkus an underlayment material.
In fact, to make such a finding appears contradictory to Wirkus since Wirkus
discloses using silicon to bond the spacers 12 to the glass blocks. See
Wirkus, col. 2, ll. 65-67.
In view of the foregoing, the Examiner’s rejection of claims 15 and 16
is reversed.

DECISION
The Examiner’s decision to reject claims 1, 4, 5, 9, and 12 as
anticipated is affirmed.
The Examiner’s decision to reject claims 6, 7, 8, 13, and 14 as
obvious is affirmed.
The Examiner’s decision to reject claims 2, 3, 10, 11, 15, and 16 as
obvious is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

RON SERROS
P.O. BOX 25592
ALBUQUERQUE, NM 87125